You have spent months on a new chair, a handbag or a dress. The shape is right and the finish looks the way you pictured it. Then a copy turns up online at half the price. A registered design is one of the ways Australian law lets you protect how a product looks.
Design rights are managed by IP Australia under the Designs Act 2003. They sit alongside trade marks, patents and copyright, but they do a different job. This guide covers what a design right protects, what it leaves out and the steps to apply. It is general information only, so check the details with IP Australia or a qualified IP attorney before you act.
What a design right protects
IP Australia says a design right protects the overall visual appearance of new and distinctive products. The focus is on how the whole product looks. To qualify, the product must have a physical form. It must be manufactured or handmade and produced on a commercial scale. IP Australia uses examples such as a dress, a handbag and a chair.
Once a design is registered and certified, the owner gains exclusive use of it within Australia. The owner can also authorise other people to use it. The right can be sold or licensed, and it can grow in value over time. It also gives the owner the right to take legal action against someone who uses the design without permission.
What a design right does not cover
Many designers are surprised by how narrow the right is. It protects appearance rather than function, and it only works for products with a physical form. IP Australia explains what design rights are and lists several things they will not protect. These are worth checking before you pay any fees.
- Concepts, processes and computer graphics with no physical form.
- Brand names and logos.
- How the product works.
- The materials used or the size of the product.
- Partial design features or changes in appearance over time.
Some designs cannot be registered at all. IP Australia names scandalous designs, bank notes, medals and certain flags, emblems and coats of arms among them. Designs using the word ANZAC need permission from the Department of Veterans’ Affairs. Designs that misuse Indigenous Knowledge are also excluded.
How design rights fit with your brand
A design right is only one part of protecting a brand. IP Australia suggests a trade mark for a logo and a patent for a process or for how a product works. A trade mark can protect the name of a product range while design rights protect the look of each product. If you are building a cohesive brand identity, the two often work side by side.
Design rights can also affect how copyright is enforced on the same product. IP Australia notes that when a product’s function relates to its appearance, you may need to file the patent and the design at the same time. This is one reason to get advice early if your product has both a new look and a new function. A short conversation with an IP attorney can save a costly mistake later.
Keep the design secret until you apply
IP Australia advises keeping a design confidential until you file an application. Posting it online, including on social media, can make the right harder to claim and enforce. If you need to show the design to a manufacturer or partner, a confidentiality agreement helps. IP Australia links to a contract generator for this kind of agreement on its website.
This has a direct effect on marketing plans. Many small brands like to tease a new range online before launch. For a product you plan to register, that early post can cause problems. Even simple low cost marketing ideas such as sharing sneak peeks should wait until the application is in.
The 12 month grace period
Mistakes happen, and Australian design law now allows for that. A grace period took effect on 10 March 2022. If you have publicly disclosed a design, you can still apply within 12 months of that disclosure. IP Australia gives the example of a designer posting a design on social media, which starts the 12 month clock.
The disclosure can come from the designer, the owner or someone they authorised, such as a marketing company. It also covers someone who took the design without permission, such as a competitor or an employee who leaks it. The grace period does not apply to designs already published on the Australian Register of Designs or a similar overseas database. It also does not cover anything published before 10 March 2022.
The grace period is a safety net rather than a plan. IP Australia warns that a third party may start using a substantially similar design during that time. If they do, an exemption for prior use may stop you taking action against them after registration. The IP Australia grace period guidance recommends filing as soon as possible and getting legal advice before relying on it for market testing.
To claim the grace period, you submit a declaration stating when and by whom the design was first published and how it was used. IP Australia may ask for dated evidence. Examples include screen captures, social media account histories, staff emails and sales or marketing plans. The declaration should come from someone with direct knowledge of what happened.
Search before you apply
A design must be new and distinctive to be protected. Before you apply, search the internet and social media for similar products. You should also search IP databases in Australia and overseas. IP Australia runs its own searches during certification and will tell you in writing if it finds a design too similar to yours.
Registration and certification
Applying for a design right in Australia is a two part process. Registration comes first and takes about two months, according to IP Australia. Certification follows and takes about four months. Fees start at $200 for registration and $500 for certification, so check the current figures before you budget.
IP Australia lists the rights to exclusive use and legal action for a design that is registered and certified. Plan for both steps in your timeline and your budget. You can include several designs in one application, but only if each product falls in the same Locarno class. Each design in the application carries its own fee, so a large range adds up quickly.
How long protection lasts
A design right lasts up to 10 years. You must renew it at the five year mark to keep it in force. It only protects the design within Australia. If you plan to sell overseas, IP Australia notes you can file overseas within six months of your Australian application.
For a growing business, design rights can be a real asset. They can be licensed or sold, which gives them value beyond stopping copies. That value is worth factoring into any model of continuous business growth. It is also one more asset to understand before you talk to a lender about security for a business loan, though each lender sets its own rules.
Frequently asked questions
Can I register a logo as a design?
No. IP Australia says design rights do not protect brand names or logos. A trade mark is the usual way to protect a logo.
I already posted my design online. Is it too late?
Not always. If the post was made on or after 10 March 2022, you may be able to use the 12 month grace period. Apply as soon as you can, as another party’s prior use can limit your rights.
How long does a design right last?
Up to 10 years in Australia. You need to renew it after five years. Protection only applies within Australia.
Do I need both registration and certification?
IP Australia describes the process as having two parts. The rights to exclusive use and legal action are listed for designs that are registered and certified. Plan for both stages from the start.
This article is general information about Australian design rights and is not legal advice. Rules, fees and processes change, and your situation may differ from the examples here. Speak with a qualified lawyer or IP attorney, or contact IP Australia, before making decisions about your designs.